Rorschach ≠ Likelihood of Confusion

One of the problems with “trademark bullying” can be a failure to comprehend the legal standard governing most trademark disputes: Likelihood of confusion.

Another is a failure to appreciate the subjective nature of whether the legal line has been crossed or whether there has been an attempted trademark overreach.

Understanding that trademark rights are dynamic (not static, meaning they can grow or shrink over time) and that this type of intellectual property is not amenable to precise demarcation like a real estate property line, is key.

Likelihood of confusion is a surrogate to predict consumer perceptions, so when a demand exhibits an unhealthy preoccupation of the brand owner’s mind, say so.

One trademark demander quietly went away after receiving this partial response:

“Setting aside how a relevant customer would view the design, the design looks no more like the letter N (with an extraneous line) than it does the letter X within parallel lines, or a plus sign within parallel lines, or a stylized number 8, or a stylized lemniscate, or a tilted hour glass, or a spindle, or a bowtie, or a stylized 4b, or any number of other equally strained possibilities. With a good imagination, one can pick out a lot of things when confronted with a design element, but a Rorschach exercise isn’t the test for trademark infringement or confusing similarity.”

Another is the example Seth Godin wrote about on DuetsBlog in April 2019.

I’m thankful for the opportunity to discuss this important trademark topic with one of my talented partners at GT, Candice Kim, and we’re also joined by the learned Leah Chan Grinvald, Professor of Law, at Suffolk University in Boston, who authored Shaming Trademark Bullies.